Crash course on trademarks: Trademark-related treaties
A trademark is in principle a purely national affair. Separate trademark registrations must be made in all the countries in which trademark protection is desired. To ease this situation somewhat, various international treaties have been established with which multiple trademark registrations can be obtained through a single procedure. The Netherlands, Belgium and Luxembourg for example have a single trademark law. Any registrations under this law automatically results in a trademark that is valid in all three countries.
The Paris Convention for the Protection of Industrial Property (1883) contains various important provisions for trademarks. The most important one is a priority right. This means that one can apply for a trademark in one country that is a member to the Paris Convention, and then within six months file subsequent applications in other member countries and claim the priority date. The later registrations will then receive the registration date of the first registration. This can be a great benefit if in the mean time someone else had filed for the same trademark in those other countries.
Further, trademarks duly registered in the country of origin shall be accepted for filing and protected as is in the other countries of the Union. The only reasons under which the trademark offices of those other countries may refuse the registration is when the trademark infringes rights acquired by third parties in those countries, where the trademark is devoid of any distinctive character, or when the trademark is contrary to morality or public order or may deceive the public.
Special protection is given to so-called well-known marks. The registration or use of a trademark which constitutes a reproduction, an imitation, or a translation liable to create confusion, of a mark considered to be well known in a country is prohibited. If the holder of the well known mark finds that such an other mark has been registered, he can request a cancellation of that registration within 5 years. If the registration of the other mark was done in bad faith, there is no restriction on the time in which the holder of the famous mark can request cancellation.
The Madrid Agreement concerning the International Registration of Marks (1891) is a special treaty designed to ease the acquisition of trademark rights in various countries. After an initial registration in his own country, an applicant for a trademark can make a so-called international registration at the International Bureau (IB) of the WIPO in Geneva, indicating the member countries in which he would like to have trademark protection. The IB then makes the registration and passes it on to all the designated member countries of the Madrid Agreement. These then have one year in which to refuse the registration in their country.
The registrations that are a result of the international registration can be annulled if the original national registration is refused, annulled or dropped in the first five year after the first registration date. An annulment resulting from a legal action started after the original registration is more than 5 years old cannot affect the international registration. So, if you want to get rid of an international mark established under the Madrid Agreement, you should try to get the original national registration annulled by starting a legal procedure to that end within five years after the first registration. This is known as a central attack on the international registration.
The Protocol relating to the Madrid Agreement concerning the International Registration of Marks (1989) contains basically the same provisions as the Madrid Agreement itself. There are some important differences. The first difference is that not only countries, but also regions, such as the European Community, can be a member. This way, for example a Community Trademark (see below) can act as a first registration.
Second, under the Protocol one can ask for the international registration based on only the application of a trademark, rather than the registration. Registration often means that the trademark office has to accept the application. If this takes more than six months, it is no longer possible to use the Madrid agreement to get an international registration for the trademark.
Third, if the so-called central attack results in the annulment of the original trademark (or application) the holder of the international registration under the Protocol can in all of the countries ask for a conversion. The trademarks in question are then converted to national trademarks and treated as if they were applications filed on the filing date of the (rejected) national application. This way, the holder of the international registration still has a chance to get national trademark rights in at least some of these countries.
If the country of origin is a member of both the Agreement and the Protocol, and the countries in which the international registration should have a fact is also a member of the Agreement and the Protocol, then the provisions of the Agreement take precedence over the provisions of the Protocol in these countries.
As a result of Council Regulation 40/94 (1993) and Regulation 3288/94 (1994), it is now possible to obtain one single Community Trademark that is valid in all countries of the European community. Applications for Community Trademarks are handled by the Office for the Harmonization of the Internal Market (OHIM).
A Community Trademark is valid in the European Community as a whole. It is not possible to limit the geographic scope of protection to certain member states, and as a consequence an invalidation, refusal or expiry of a Community Trademark necessarily applies for the whole of the European Community. Everyone is still free to apply for national trademarks instead of Community Trademarks, and one can in theory even have Community Trademarks and national trademarks for the same mark.
What can be a Community Trademark
To qualify as a Community Trademark, a sign should be capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings. Thus, the following can all be Community Trademarks:
- word marks including letters, numbers or combination of letters, numbers and words;
- figurative marks, whether or not including words;
- figurative marks in colour;
- colours or combinations of colours;
- three-dimensional marks;
- sound marks;
It is worth noting that a Community Trademark must be distinctive in all the member countries of the EC. With a national trademark, a Dutch company could for example use the descriptive word for the product he is selling in Spanish or Greek as his Dutch trademark. As neither Spanish nor Greek is a normal language in the Netherlands, such a mark could very well be distinctive. However, a Community Trademark that is descriptive in Spanish or Greek cannot be distinctive and therefore is invalid. A Community Trademark can be declared void by the OHIM or by any national court in the EC.
Examination of trademark applications
The OHIM examines all trademark applications to see whether an absolute ground for refusal applies. An absolute ground for refusal means that the mark in question:
- is devoid of any distinctive character;
- exclusively serves to designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service, or other characteristics of the goods or service;
- has become customary in the current language or in the bona fide and established practices of the trade;
- is contrary to public policy or to accepted principles of morality;
- is of such a nature as to deceive the public, for instance as to the nature, quality or geographical origin of the goods or service.
For certain kinds of goods, there are some other absolute grounds for refusal. These relate to things like the shape of the goods, the origin of alcoholic beverages and certain official emblems.
If the OHIM refuses a trademark application on one of the first three absolute grounds, then the applicant can overcome that refusal by showing that the trademark has become distinctive in consequence of the use which has been made of it. Within three months after the trademark application has been published, anyone can start an opposition based on the so-called relative grounds for refusal. This can only be done by proprietors of earlier rights.
The following constitutes an earlier right:
- an earlier CTM or a CTM application;
- an earlier national trade mark or a national trade mark application filed or registered in a Member State of the European Union;
- an international registration under the Madrid agreement or the Madrid Protocol with effect in a Member State of the European Union;
- a non registered mark or another sign used in the course of trade of more than mere local significance valid in a Member State;
- a trade mark which is well-known in a Member State (within the meaning of Article 6 ter of the Paris Convention).
The CTM application or the CTM will be refused on the basis of an earlier mark, if
- it is identical with the earlier trade mark and the goods or services for which registration is applied for are identical with the goods or services for which the earlier mark is protected;
- because of its identity or similarity to the earlier trade mark and the identity of similarity to the goods or services covered by the trade marks, there exists a likelihood of confusion on the part of the public, including the likelihood of association with the earlier trade mark;
- it is identical or similar to an earlier trade mark and is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered, where the earlier mark has a reputation and where that mark would suffer unfair advantage or detriments in respect of its distinctive character or its repute.
The Nice Agreement concerning the International Classification of Goods and Services for the purpose of the Registration of Marks (1957) is not a trademark treaty like the other treaties mentioned in this chapter. Rather, it provides an internationally accepted definition of the various types of goods and services for which one might want to obtain trademarks. In a trademark application the applicant must indicate for which goods or services protection is desired. By referring to the class numbers as defined in the Nice agreement, it is clear to everybody what the trademark protects.
The Nice Agreement defines 34 main classes for goods and 11 classes for services. They may be accompanied by explanatory notes which describe in greater detail the type of product or service for which protection is desired. There is also an alphabetical list of goods and services, which comprises about 10,000 indications referring to goods and 1,000 indications referring to services that can be used for this purpose. This way, an applicant can indicate for example that his registration applies only to computer keyboards and not to mice or other peripherals.